Patents Citing More than 2,500 References

Over the past year-and-a-half, 52 utility patents have issued that each cite more than 2,500 references.  It turns out that the vast majority of those patents are owned by one company –  Personalized Media Communications. PMC's recently issued patents also have the dubious honor of each having been filed prior to the 1995 change in patent term. Thus, PMC's patents will remain in force 17 years from the date of issuance even though they were filed more than 16 years ago. 

The second major excessive citer is Pelikan Technologies. Pelikan's patents relate to diabetes diagnostic tools, including electronic lancing. The other companies with excessive citations of prior art include Abbott Diabetes, Aloft Media, Angiotech Pharma, and Bayer Healthcare.(I could not find any patents that issued from 2000 through 2009 that cited more than 2,500 references).

Assignee Name

Patents on List

References Cited (avg)

Patent Documents Cited (avg)

Non-Patent Literature Cited (avg)

Example Patent

Personalized Media Communications

38

2,810

1,284

1,526

7966640

Pelikan Technologies

9

3,239

3,239

0

7981056

Abbott Diabetes Care

3

2,866

2,303

563

7920907

Bayer Healthcare

1

2,510

1,005

1,505

7897623

Angiotech Pharmaceuticals

1

3,068

245

2,823

7820193

Aloft Media

1

3,255

3,006

249

7970722

Why do PMC's patents take so long to issue? First, lets talk about what did not happen: (1) PMC never needed to appeal an examiner rejection; (2) PMC never even received a final office action; and (3) the application was not held back because of a secrecy order. Rather, the problem seems to be that PMC filed too many applications in 1995. Since PMC was only a small company with a so many patent applications, the PTO decided that it should "coordinate" the examination of PMC's patents. The result appears to be simply that the PTO created excessive delay, including four PTO-initiated suspensions of prosecution and Office Actions penned by at least three different examiners.

In one case that I looked at, some of the key file-history entries include:

File Application with a preliminary amendment

1995

Second Claim Set Amendment

1996

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patents

1997

First Non-Final Office Action Rejection

1997

Third Claim Set Amendment

1997

Second Non-Final Office Action Rejection

1998

Fourth Claim Set Amendment

1998

Fifth Claim Set Amendment    

1999

Sixth Claim Set Amendment

2002

Third Non-Final Office Action Rejection (New Examiner)

2002

Seventh Claim Set Amendment

2002

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patents

2004

PMC Filed Petition to Cancel Suspension and Speed-Up the Examination

2005

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patent applications

2007

Examination Suspended (At PTO's Request) to Consider the Plethora of PMC patent applications

2008

Ex parte Quayle Action (With Proposed Amendment and New Examiner)

2009

Notice of Allowance

2010

Delay for additional Citation of References

2010

Issue

2011

69 thoughts on “Patents Citing More than 2,500 References

  1. Anyone make the connection that Abbott Diabetes Care = Therasense (after Therasense was purchased by Abbott)?

    First you get dinged for not citing references and now you get dinged by Patentlyo for citing too much. Laugh.

  2. I for one do not understand. If the Banks have Vaults and Keys to care for theirs and other peoples Money. Then why doesn’t the Patent Office do the same. After all it may all not be realized as real money yet, but a lot of it will be.
    I also don’t understand knock offs and why it takes so long to catch them. An example I go on this Website all the time. And I know a particular seller(s) that sells things. They are all knock offs. Some are even what I would call unacceptable. People work hard for their Money. If they are going to buy an Item that they want instead of need, and it is not what they expected, why are these people still out there? And even with Paypal some of the people don’t realize they are getting scammed and think oh wowee I have a whatever and don’t know they really have a what is it. Do you think that is fair? And come to think of it, we know where the goods are from. But do we know what the Money they are scamming from us is going? Do they have to set up shop here too?

  3. So, the Patent Office was likely embarrassed, and embarrassing a bureaucrat is a dangerous game to play.”

    Lulz.

  4. seemed to be enough to warrant

    Why? There is no legal limit. There is no reason for “special” treatment that can legally be made.

    Again, “too many” connotes an unwarranted value judgement.
    Not needed.
    Not wanted.

    Back up the action with a legal reason – not a touchy-feely one.

  5. I’m guessing that entails a lot of copying. Is this fair use? Or are patent prosecutors and the USPTO engaging in a lot of copyright infringement?

  6. Not really. I remember all of us at the time wanted to file as many continuations/divisionals as possible to obtain the benefit of the 17-year from issue term. These guys did a good job, probably too good. But if the client was willing to pay, they should be applauded at their efforts here. 245 cases, all off of one disclosure. Hard to imagine. The firm must have been tied up full time for awhile just on this one project.

  7. I was wondering if the 245 were all continuations. I checked the first in the list of 1995 patents. It just issued as 7,831,204.

    Here is the benefit claim. “CROSS-REFERENCE TO RELATED APPLICATIONS

    This is a continuation of application Ser. No. 08/113,329, filed Aug. 30, 1993, which was a continuation of application Ser. No. 08/056,501, filed May 3, 1993, now U.S. Pat. No. 5,335,277, which was a continuation of application Ser. No. 07/849,226, filed Mar. 10, 1992, now U.S. Pat. No. 5,233,654, which was a continuation of application Ser. No. 07/588,126, filed Sep. 25, 1990, now U.S. Pat. No. 5,109,414, which was a continuation of application Ser. No. 07/096,096, filed Sep. 11, 1987, now U.S. Pat. No. 4,965,825, which was a continuation-in-part of application Ser. No. 06/829,531, filed Feb. 14, 1986, now U.S. Pat. No. 4,704,725, which was a continuation of application Ser. No. 06/317,510, filed Nov. 3, 1981, now U.S. Pat. No. 4,694,490.”

    It appears that many, if not most, of the 245 were continuations to a common parent, the ‘531 application, filed in 1986 (which was itself a CIP of earlier applications).

    So, US ‘204 that issued last year is a continuation of an application originally filed in 1986, 24 years before, and will expire in 2027, 41 years after that 1986 application. I don’t see a terminal disclaimer.

    Hmm… Where have I seen this before?

  8. Wait a minute…. Why would citation of 2500 documents be problematic? Doesn’t the PTO search far more documents than that on a regular basis? Didn’t the “Final Rules” promulgated by Dudas et al. require APPLICANTS to search far more documents than that if they dare file an application with more than 25 claims in it? Weren’t Applicants to be required to search every document on the planet according to the “Same” protocol followed by the Office?

  9. “many simply dump references as a way of absolving themselves of their duty to disclose”

    As a rule, this is exactly what we do with results from foreign Office Actions, because our clients won’t pay us to read them. They expect an IDS filed at an administrative level for a flat fee. The foreign examiner must believe it all to be material, never mind that this has nothing to do with any US standard of materiality. We then rely on the Examiner to read them! Usually there aren’t a huge number, though.

    When we do read all the references is when we have paid to have a search done and we are preparing a new application. then we write the claims around them.

    If the client dumps a large number of references on us when we are preparing a new app, that is when it becomes a problem. Sometimes they give us a list of every patent they know about on the topic in general. We have to go over them, but only have time to do so in a cursory way, and it takes strong nerves to not put them all in an IDS. I am not sure that Therasense will change this.

  10. Why is that? I see no reason why 17 years from the issue date is unreasonable. Especially where the delay is not caused by the applicant.

  11. 6 said: “Either way, long IDS’s are for your loss as well as the office’s when they get too large.”

    I think this is a fascinating point. Although Therasense perhaps helps a bit, in general Fed. Cir. jurisprudence just pushes practitioners to cite anything that might even remotely be considered material. Other than a couple of off the wall cases discussing “burying”, that are generally considered to be one-offs by most practitioners, I have never really seen this issue discussed. Really, practitioners should have to actually review and understand all of the references they submit (gasp) and actually make informative IDS submissions, whereas many simply dump references as a way of absolving themselves of their duty to disclose.

  12. “So the Examiner has to take the time to find each of these books in a library, check them out of the library…

    Uhm, no. Applicants are required to provide copies of NPL to the examiner.

  13. Only if the other applications are delayed. I was offering the PTO a way to handle this kind of situation with promptness.

    Now, for a real abuse of patent term by real abusers — reexaminations.

  14. Do not confuse the normal meaning of “term” with the accuation here of malicious conduct meant for retaliation of actually using the patent system just because someone thinks that there are “too many” applications.

    There is no legal basis for such selective (mis)treatment. Your response smacks of an abuse of power.

  15. Trickle down. Directing how to use resources & spend time. I would guess decisions that it was better to spend time doing many other cases instead of spending a tremendous amount of time doing just one of these types of cases. Better for the office as a whole to spend 100 hours getting 10 cases done instead of one. Plus the huge hit the examiners would have to take on production. This is my guess/opinion & not a “fact”, but…

  16. I’m sorry, did you see a complaint here? I just pointed-out that there was a difference between dealing with prior art vs ODP rejections.

    Don’t put words in my mouth.

  17. If I find 100 ODP references, I have to make 100 ODP rejections.

    Cut, paste, replace wildcard with placeholder, done, next.

    Stop complaining about your job, and do your job.

  18. Harvey and PMC (there’s also a PMMC) were very well known about 10 years ago but have largely been forgotten now.

    When the patent term changed from 17 to 20 years, Harvey filed thousands of applications. One of Harvey’s attorneys was even photographed in the Washington Post driving a forklift filled with patent applications into the Patent Office in what could be termed a publicity stunt.

    So, the Patent Office was likely embarrassed, and embarrassing a bureaucrat is a dangerous game to play.

  19. True; however, if I find 100 102(b) references, I can make one rejection and cite the others as cumulative.

    If I find 100 ODP references, I have to make 100 ODP rejections.

  20. If the Cat ate the Rat,
    and the Rat now I see,
    knew more than he should have,
    and used it of thee.

    But the Car turned around,
    and ate all He could.
    And the Rat doesn’t matter,
    All the evil, no good.

    So we know there’s a Santa,
    And we know there’s a Knome.
    So please please Coogi,
    Lend me a Comb.

  21. Here is a similar story

    On July 21, 2011 the United States Patent and Trademark Office published proposed changes to rules 1.56 and 1.555 in a Federal Register Notice that would effectively adopt the ”but for” materiality standard and affirmative egregious misconduct exception announced by the Federal Circuit in Therasense v. Becton, Dickinson.

    Indeed, the Therasense decision has created quite a buzz in the patent community. For years the Federal Circuit law relating to inequitable conduct was difficult to reconcile, to be polite. Inequitable conduct, which relates to a violation of the duty of candor owed to the Patent Office during patent prosecution with intent to deceive the Office, is supposed to punish those who engage in nefarious activities connected with obtaining a patent from the USPTO.

  22. Why would you support that kind of gaming? The patent office should not act to deliberately limit an applicant’s term.

  23. “if you file 100 closely related applications, the PTO gets 100 times the appropriate fees, but has to do 9801 analyses for double patenting among them”

    I think examiners forget that it is still a “double patenting” rejection (i.e., an attempt to patent the same invention and/or obvious variations thereof) — not some twisted, well … if I add reference A + reference B, mix a little excessively broad claim interpretation, and bake in a little ignoring claim limitations analysis — you know, a typical 103 rejection.

    So, what do you guys do for Samsung, IBM, Cannon, Microsft, each of whom file thousands an applications a year?

  24. “the adjective ‘excessive’ might even be replaced with the adjective ‘paltry.'”

    Now that was funny.

  25. “He showed it to you in his office? Or what? “

    Yes, he showed it to me in his office. We were talking about different ways to improve patent examination efficiency. At the time I wasn’t aware that examiners could OCR NPL using Adobe and word search it. He showed me that they could. In fact, using Adobe’s word search, he could search the entire set of files in one search. I didn’t know you could do that. Now I use that technique for novelty searches I get back from my search firm.

    “OCR isn’t perfect.”

    That’s an excellent point.

    “Either way, long IDS’s are for your loss as well as the office’s when they get too large.”

    I agree.

  26. Leahy and Smith should add an amendment saying that any patent that cites 2500 references is by definition unenforceable, and that this provision applies retroactively to issued patents as well. Now THAT would be a useful amendment!

  27. As of now, 48 have issued as patents, 34 are pending and 163 have been abandoned.

    LOL. Applicants are fxxxxin rextxards.

  28. “What exactly does “too many” connote?”

    Well supar genioos, in this context it means enough to get the PTO to feel like all your apps need consolidated examining.

  29. “but the process I described was shown to me by an examiner as how he dealt with NPL. ”

    He showed it to you in his office? Or what?

    You can of course make a pdf out of the image file but I don’t see that as making the OCR any easier, though it might. I haven’t dealt with it for awhile luckily. Had one 150 ref + some NPL IDS other day and I just manually entered them.

    “I’m not sure what you mean by “doctoring the copy/paste”. ”

    OCR isn’t perfect. When you OCR you usually then copy/paste the result into EAST. You have to review and then potentially doctor the OCR. Not to mention that on occasion the attorney mistyped the reference number in (this gets more common with 100+refs) and so you can either just check it off as considered or you can take the name/date that is supposedly on the ref and look up what ref he meant to cite. And you usually wouldn’t just be doing this out of the goodness of your heart, but rather to investigate a legitimate possibility of a material reference.

    Either way, long IDS’s are for your loss as well as the office’s when they get too large.

  30. Here’s a breakdown of what happened when. This is from the “continuity” tab of the PAIR records for what appears to the original application, 06/317,510.

    1986 – 1993: 6 applications filed, all issued as patents

    January – June 1995: 245 applications filed. As of now, 48 have issued as patents, 34 are pending and 163 have been abandoned.

    February – October 2003: 11 reexams filed. As of now, 9 reexam certificates issued, 2 pending

    2007 to June 2011: 5 more reexams filed. As of now, 2 reexam certificates issued, 3 pending.

  31. I haven’t worked at the USPTO, but the process I described was shown to me by an examiner as how he dealt with NPL.

    Nonetheless, you make a good point. I can see how if your primary method of searching is via class/subclass, then doing a strictly keyword search might be more work and less productive.

    I’m not sure what you mean by “doctoring the copy/paste”.

  32. “Because whatever the PTO decides, blame the applicant.”

    Did I say that? Someone asked how you can file too many applications. I told them. There is no “blame” that I am assigning to them for having done so.

  33. to have the PTO decide

    Because whatever the PTO decides, blame the applicant.

  34. “I fail to see why a large number of citations is an issue for the USPTO.”

    Have you ever worked there?

    “As it has been explained to me, examiners get a file with the prior art in pdf form.”

    Lulz, nope. Who told you that? We get it in “image file” format.

    “They OCR the prior art and do a key word search.”

    Sometimes you can, sometimes its easier to just manually enter all the numbers.

    “I don’t see how that’s different or harder than the searching that is currently done with the entire patent and npl data bases.”

    So then OCRing 25 pages and then doctoring the copy/paste is as easy as typing 25/300.ccls.? Lulz, good one Mark. Good one.

    “Am I missing something?”

    Why don’t you simply come in and ask to be allowed to examine an application with that many refs cited? Let us know how it works out.

    And yes, the DP stuff involves what is claimed. Although typically I deal with very little of it.

  35. “I fail to see why a large number of citations is an issue for the USPTO.”

    Have you ever worked there?

    “As it has been explained to me, examiners get a file with the prior art in pdf form.”

    Lulz, nope. Who told you that? We get it in “image file” format.

    “They OCR the prior art and do a key word search.”

    Sometimes you can, sometimes its easier to just manually enter all the numbers.

    “I don’t see how that’s different or harder than the searching that is currently done with the entire patent and npl data bases.”

    So then OCRing 25 pages and then doctoring the copy/paste is as easy as typing 25/300.ccls.? Lulz, good one Mark. Good one.

    “Am I missing something?”

    Why don’t you simply come in and ask to be allowed to examine an application with that many refs cited? Let us know how it works out.

  36. “Since PMC was only a small company with a so many patent applications, the PTO decided that it should “coordinate” the examination of PMC’s patents.”

    I lulzed.

    I wonder what happened between 1998-2002? Interviews? Or just amendments?

    “How can you file too many applications?”

    You can file enough to have the PTO decide to “coordinate” all your apps lulz.

  37. “the problem seems to be that PMC filed too many applications in 1995.”

    How can you file too many applications? Is it better to file fewer applications but have each include hundreds/thousands of claims?

  38. Another issue that is gumming the works up at the USPTO is that Personalized Media has been litigating its patents that have already issued (e.g Personalized Media versus Thomson Consumer Electronics). Those patents are being challenged by the defendants with ex parte reexaminations (e.g. serial number 90/011,744). The patent office can’t do a double patenting analysis on the pending child applications while the reexaminations are underway for the parents. 15 reexaminations have been filed so far starting in 2003.

    Personalized media has been doing fairly well defending its claims in the reexaminations. Many of the claims are having their patentability confirmed.

  39. Of course I’m missing something. Double patenting has to do with what’s claimed in the earlier applications, not what’s disclosed. It is a different analysis and hence more work.

  40. I fail to see why a large number of citations is an issue for the USPTO. As it has been explained to me, examiners get a file with the prior art in pdf form. They OCR the prior art and do a key word search. I don’t see how that’s different or harder than the searching that is currently done with the entire patent and npl data bases.

    Regarding double patenting, I again don’t see why the number of filings an applicant does is relevant. Double patenting is the same as a 102 or 103 analysis. If the claims are obvious or anticipated by an applicant’s earlier patents, then a double patenting rejection is made. If the earlier patents are not owned by the applicant, then it’s a 102 or 103 rejection. Same analysis. Same amount of work.

    Am I missing something?

  41. No matter how someone might rationalize, there is simply no valid excuse for patents that will not expire, and will remain fully enforceable, for 33 or more years (a third of a century or more) after their applications were filed, plus up to 6 more years beyond that date for lawsuits for partial back damages.

  42. Looking at the corporate owners each with just three patents, or just a single patent, in the list are there special circumstances surrounding that one patent. For example, were those patents (or members of their respective patent families) associated with multi-national patent litigation? Seeing the names Abbott, Bayer and Angiotech, this factor immediately comes to my mind.

  43. I assume the PMC patents were directed to related subject matter, otherwise there would have been no reason to treat them as a group. So, I would expect the main problem to come from the fact that all had to be examined “in parallel” so that there would be one common claim interpretation given in all related cases, and that relevant prior art be shared.

    The problems caused the PTO may not have solely been related to double patenting.

    The applicant apparently cooperated by filing prior art from related cases in all others of the related cases. This practice did not create problems, but helped solve them.

    I don’t fully understand why the PTO does not have an more automated system for examiners to follow what is going on in related cases. Each examiner should have links he could click to find out, with some indication that there was new activity in a related case he had to review. They should not need a time out to have get-togethers to discuss these issues.

  44. I see. So, if an applicant files many applications, he should examine them himself. The only reason they agreed to that nonsense is to put an end to 15 years of prosecution.

  45. The PMC cases, generally known as “the Harvey cases”. A well known, relatively small group (compared to certain other large group(s) filed just pre-GATT), of cases that had issues during prosecution due to their large # of related filings, overlapping claims, massive IDSs & repeated changing of claims (both in scope & even invention). Plus the interference from upper management that often didn’t allow the examiners to do common things like restrict, either original or by original presentation, for example. Most of the issues that are in these, & other groups of, cases is due to how the examiners were instructed to prosecute them & not actions by the examiners themselves.

  46. The applicant’s own penchant for filing huge numbers of applications created that problem.

    Shameful, naked unabashed “blame the applicant.”

    How dare he actually use the patent system. All the FN nerve.

    If you think that the analysis has to be on the square of the number of apps, you do not know how to do the analysis (Hint: Excel has simple tools for such that any highschooler can master).

  47. The applicant’s own penchant for filing huge numbers of applications created that problem.

    The fees collected increase directly with the number of related applications filed, but the number of double patenting analyses that must be undertaken increases as the square of the number of applications filed. In other words, if you file 100 closely related applications, the PTO gets 100 times the appropriate fees, but has to do 9801 analyses for double patenting among them.

    Beyond a point, the burden on the PTO caused by the applicant crosses a point at which the applicant should bear some responsibility in ensuring that there are no double patenting issues. The applicant apparently agreed, since they went along with the administrative requirement to get the patent issued.

  48. One could only envision that had Dudas remained in office and the Therasense and i4i decisions had gone the other way, that these numbers would be the norm rather than the exception, and the adjective “excessive” might even be replaced with the adjective “paltry.”

  49. Ok the best part of the ‘640 app is, in the Ex parte Quayle action, the examiner required the applicant to do an obviousness type double patenting analysis with co-pending applications. Ridiculous and lazy.

  50. Petition decision of 8/31/2005 of the ‘640 patent – “PTO’s own unwillingness to comply with its own rules and procedure led to this own abhorrent situation.”

Comments are closed.